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Saturday, 25 October 2014

New Yorkers love their pizzas and have definitive opinion
about them, including the way to eat them. Newly elected New York City Mayor Bill de Blasio even created a controversy when seen shortly after his election
eating a pizza with a knife and fork, instead of using the New York method, folding
a slice of pizza in half length-way and eating it with one’s hands. One of my
proudest moments ever as a New Yorker is to have been asked by a NYC policeman
where I had bought the slice I was eating on the street, using the proper New
York way, of course!

Nobody Ever Ate a Pizza New York Style Better than Tony

This method is well adapted to New York-style pizzas, which
are pizzas with a thin crust, a lot of cheese, and crunchy edges. The various recipes
for tomato sauce are jealously kept by their makers.

New York pizza is very good, but can a particular pizza flavor
be trademarked? A Texan pizzeria thought so, but Judge Gregg Costa from the
Southern District of Texas was not convinced, calling Plaintiff’s flavor of its
pizza infringement claim “plainly
half-baked.” The case is New YorkPizzeria, Inc. v. Syal et al, 3:13-cv-00335.

Plaintiff was New York Pizzeria Inc. (NYPI), a restaurant
franchisor. It filed a suit against one of its former employee and against Ravinder
Syal, a restaurateur, alleging that Defendants conspired to steal its recipes by
using, without permission, the username and password of a NYPI franchisee to
log into a site to download NYPI’ s trade secrets, including recipes and
manuals.

Plaintiff claimed violation of the Computer Fraud and Abuse
Act and the Stored Communication Act, which I will not discuss in this post,
and also claimed trade mark infringement for copying NYPI’s “distinctive flavors,” and trade dress
infringement for copying NYPI’s “distinctive
plating methods.”

Can a Flavor be Trade
Marked?

Plaintiff claimed infringement of its trade mark in the
flavor of its food and argued that the “specially
sourced branded ingredients and innovative preparation techniques contribute to
the distinctive flavor” of its products and that, by using the same
ingredients and processes, Defendants have infringed its trade mark.

Plaintiffs cited the famous Qualitexcase, where the U.S. Supreme Court held in 1995 that colors
may be trade marked if they have obtained secondary meaning and thus are not
merely functional, but, rather, indicate the source of the product.

Judge Costa agreed that a flavor could be trade marked, but added that it would have to identify the
source of the product. He noted that, just as colors, flavors cannot be
inherently distinctive and must acquire secondary meaning to be used as a trade
mark.

Judge Costa also noted that flavors are functional and that
the functional features of a product are not protectable. The Supreme Court
defined in a footnote in Inwood Laboratories, Inc., quoted in Qualitex,
that the functionality doctrine “forbids
the use of a product's feature as a trademark where doing so will put a
competitor at a significant disadvantage because the feature is "essential
to the use or purpose of the article" or "affects [its] cost or
quality."

Judge Costa noted that “[t]he functionality doctrine is a significant
hurdle for any party seeking to protect a flavor as a trademark,” citing
the In re N.V. Organon Trademark
Trial and Appeal Board (TTAB) case, where the TTAB denied trade mark
registration to the orange flavor of a pharmaceutical pill, as the flavor has
for function to cover the unpleasant taste of the medicine.

For Judge Costa, the functionality hurdle is even higher for
the flavor of a particular food, as “[t]he flavor of food undoubtedly affects its
quality, and is therefore a functional element of the product.” He
dismissed the trade mark infringement pizza flavor claim.

Can a Particular Way
to Present Food on a Plate be a Trade Dress?

Plaintiff also claimed “plating
infringement,” that is, infringement of a particular way to present food
which amounts to a trade dress. The Court recognized “that there may be some rare circumstances in which the plating of food
can be given trade dress protection.” This may occur if a particular way to
present food is inherently distinctive or if it has acquired secondary meaning,
and if it serves no functional purpose.

Plaintiff’s way to present food was not found, however, to
be protectable by trade dress, because Plaintiff had merely described its way
to present food as including, but not being limited to “its baked ziti, eggplant parmesan, and chicken parmesan dishes,”
but did not explain what exactly made its presentation of the food distinctive.

Just imagine, if the Court would have agreed to protect such
way to present food, no other restaurant in the WORLD would have been able to so
present baked ziti, eggplant parmesan and chicken parmesan dishes…

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